By comparison, however, the second phase of AIA implementation pales in comparison to the third phase of AIA implementation. Effective on Saturday, March 16, 2013, the United States is now a first to file country, abandoning the first to invent laws that were long the hallmark of U.S. patent law and practice. The oddity, however, is that what has been adopted is not really a first to file system. There are some exceptions whereby a person who files second can still prevail, but those exceptions are infinitesimally insignificant, and the law surrounding the parameters of the exceptions is non-existent and unfortunately rather ill defined by the USPTO at this point.
It is also critical to understand that the new law contains traps and loopholes. For those who have not spent adequate time considering the many nuances of the law you will be surprised to learn what it really means. For example, did you know that long held and previously unpatentable trade secrets can now be patented? It seems unthinkable, but then again it is also unthinkable that the law will allow for the re-patenting of inventions, but it does that as well.
So what exactly does the AIA change? The USPTO summarizes the changes that go into effect on March 16, 2013 as follows:
(1) Convert the U.S. patent system from a ‘‘first to invent’’ system to a ‘‘first inventor to file’’ system; (2) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country; (3) eliminate the requirement that a prior public use or sale be ‘‘in this country’’ to be a prior art activity; and (4) treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103. These changes in section 3 of the AIA are effective on March 16, 2013, but apply only to certain applications filed on or after March 16, 2013.
Honestly, it is impossible to in any single article or series of articles describe the magnitude of the changes ushered in by first to file. This is because Congress has fundamentally altered the definition of what is considered prior art. An applicant is still entitled to a patent unless there is prior art that renders the claimed invention unpatentable because it is not new or because it is obvious. But what references and information can be considered prior art? That is where things have fundamentally changed.
Consider the following:
- On Friday, March 15, 2013, a secret sale of a device more than 12 months before U.S. filing would have precluded a patent from being obtained. Effective Saturday, March 16, 2013, a secret sale of a device is never going to be prior art no matter how long ago it happened.
- On Friday, March 15, 2013, a foreign patent or foreign patent application would not be considered prior art as of the foreign filing date. Effective Saturday, March 16, 2013, a foreign filing date can be a prior art event.
- On Friday, March 15, 2013, an applicant could file a U.S. patent application covering an invention that was the subject of a publication provided the publication was dated less than 1 year earlier. This was true even if the publication was by another individual or entity that independently arrived at the invention on his or her own. Effective Saturday, March 16, 2013, if another individual or entity independently arrived at the invention and published an article before the first inventor filed the first inventor who filed will be unable to obtain a patent.
- On Friday, March 15, 2013, you could not file a patent application on something that you had long kept as a trade secret process. Effective Saturday, March 16, 2013, long held trade secrets could be patented.
These are but a few of the changes and nuances contained within the AIA and implementing rules.The Grace Period
Let’s take a step back and consider the so-called grace period. Under the new law we know that in some cases an inventor who publishes information about his or her invention will not be prevented from obtaining a patent if someone obtained or derived a subsequent disclosure from the inventor. The USPTO has told us that the second party, the deriving party, does not have to publish something that is verbatim in order for the true first inventor to be able to prove that the second party is a deriving party. Let that sink in. The USPTO says that the second party does not have to publish something verbatim. How is telling me what they don’t have to do useful when trying to figure out what to tell clients?
The trouble with the so-called grace period is that it is not defined. The USPTO has explained the grace period with generalities and in the negative. But telling me something is not “white” doesn’t do much to tell me what color it is, does it? It eliminates but a single choice and opens up additional questions. In the case of the grace period those questions are simply not answered and won’t be until unwitting souls rely upon its existence and the Patent Trial and Appeal Board or the Courts give us the answer on the peculiar facts presented.
What does this mean? It means first to file absolutely needs to be treated as file first! While we do not now have a pure first to file system anyone who relies on the existence of a grace period really is foolish in the extreme. File first. File often. With any invention there will be a stream of conceptions and reductions to practice. File as soon as you have an articulated invention that is susceptible to adequate description through words and drawings. File first. File often.
Trade Secrets Now Patentable
This will seem almost unbelievable to many, but as of March 16, 2013, long held trade secrets are now patentable. In fact, should Coca-Cola want to patent a secret process for making Coke they would be able to do so. But how is that possible?
35 U.S.C. 102 (a)(1) now reads: “A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…”
The USPTO explained their interpretation of the critical “or otherwise available to the public” language as follows:
Residual clauses such as ‘‘or otherwise’’ or ‘‘or other’’ are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the ‘‘or otherwise available to the public’’ residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.
Therefore, if you have a long held trade secret — and really kept it secret — it simply will not be considered prior art any more for a patent application. So if you have been told you couldn’t patent a long held trade secret you should re-evaluate. Those trade secrets are patentable now when on March 15, 2013 and earlier they were not.
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The Re-patenting of Inventions
Not every claimed invention will be able to be re-patented, but there will undoubtedly be some that will be able to be re-patented. This is possible thanks to 35 U.S.C. 102(b)(2)(C), which says:
A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if — the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
Subsection (a)(2), otherwise known as 102(a)(2), says:
A person shall be entitled to a patent unless— the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
So, if a patent or published patent application is commonly owned it may not be considered prior art against an identical set of claims in a subsequently filed patent application.
Of course, 102(b)(2)(C) does not eliminate prior art that qualifies under 102(a)(1), but 102(a)(2) makes the patent application prior art as of its effective filing date of the claimed invention. So if you keep your invention secret and file a patent application it will be secret (and not prior art) up until the application publishes 18 months after filing. If you then re-file a second application with identical claims before publication of the first application there would be no 102(a)(1) prohibition. 102(a)(2) would make that first filing prior art as of its effective filing date, but if you remove 102(a)(2) through common ownership then a common owner would be able to effectively extend their patent term by up to 18 months; longer if publication doesn’t occur at 18 months.
On limiting factor of 102(b)(2)(C) is that the second or subsequent application containing identical claims would need to be filed by another inventor. Nevertheless, look for pharmaceutical companies to seek to exploit this re-patenting loophole. An extra 18 months of patent protection could mean many billions of dollars for a blockbuster drug.
The moral of the story is this: Don’t assume you know what first to file means, or you know what the AIA contains. There are traps and loopholes that will need to be avoided and ought to be exploited.
If you have questions about the AIA please contact me and we can arrange for a consultation.